Supreme Court rules band may trademark its name

Tuesday

Jun 20, 2017 at 4:39 PM

By David G. Savage, Tribune News Service

WASHINGTON — The Supreme Court extended trademark protection on Monday to words and names that may be offensive, ruling that the First Amendment right to free speech allows an Asian-American band to call itself The Slants.

The unanimous decision will also likely preserve the trademarked and controversial name of the Redskins, Washington’s NFL team.

In recent years, such trademarked names have come under attack as racially offensive. Since 1946, the U.S. trademark law has included a provision that barred the government from registering trademarks that may “disparage” people or groups.

The case of The Slants raised questions about government’s efforts to police names that may be offensive to one group or another. Simon Tam, the leader of the Portland, Ore.-based band, said he chose the name to make fun of a word that had been used as a slur against Asians, and thereby to “drain” it of any derogatory impact, as the court put it.

An examiner at the U.S. Patent and Trademark Office did not share in the joke and refused Tam’s request to trademark the band’s name. The examiner cited dictionaries that defined “slants” or “slant-eyes” as a derogatory or offensive term.

Rather than second-guess that judgment, the Supreme Court instead struck down the part of the law that called for making such assessments. “We now hold that this provision violates the Free Speech Clause of the First Amendment,” Justice Samuel A. Alito Jr. said. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The legal dispute turned on the nature of trademarks. Are they the words of a private person, or are they official words being spoken and endorsed by the government?

Two years ago, in a somewhat similar case, the high court ruled that specialty license plates represent the speech of the government, not the car owner. Therefore the state of Texas could refuse a request from the Sons of Confederate Veterans to issue a license plate featuring a Confederate battle flag. By a 5-4 vote, the court upheld the state’s decision and rejected the free speech claim from the group.

But in Monday’s opinion, the justices decided that “trademarks are private, not government, speech.”

Alito said that trademarks historically were used by businesses to identify their products. People and companies can seek to register their trademarks with the federal office. And doing so gives them extra legal protection against others using the same mark.

But registering the trademark does not convert it into the government’s message, he said. And if so, the government has no authority to discriminate against some words and messages that it finds troubling.

“We have said time and time again that the ‘public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers,’” Alito said in the case of Matal v. Tam.

Alito worried that if the court were to uphold the government’s power to deny trademarks in this case, it might suggest the government also could refuse to issue copyrights for books whose message was deemed offensive.

The Redskins football team had been in danger of losing its trademark protection. The federal office and a federal judge said the team should have its trademark revoked because the name was offensive to Native Americans. But the team had appealed, and it looks sure to prevail after Monday’s ruling.

Most experts in trademark law welcomed the decision. “It “makes sense in a lot of ways. Registering a trademark does not mean that word or group of words is government speech,” said Roy Gutterman, a Syracuse University law professor.

But others saw potential for problems. “It seems this decision will indeed open the floodgates to applications of all sort of potentially offensive and hateful marks,” said Lisa Simpson, a New York lawyer who specializes in intellectual property law. “While this may be right under the First Amendment, it seems the responsibility will now pass to the public. And so it will be up to consumers to reject the most hateful of these marks and slogans.”